28 September, 2014

European fair dealing is ever so slowly growing into its big boy shoes, and amidst that growth there are some growing pains that need to be sorted out by the guardians, the judiciary. With new fair dealing exceptions only days away from coming into force here in the United Kingdom, it seems only pertinent that the most influential court in Europe deals with an issue that is so close to this new set of fair dealing exceptions; parody and satire. Although the UK's cousins across the pond in the United States and Australia have accepted parody as a form of fair dealing or use prior to the old Kingdom, the UK will face challenges to this new regime in the coming years - for which European consideration is always welcome.

The case in question is Deckmyn v Vandersteen , decided only a few weeks ago, which dealt with a drawing relating to a recent election in Belgium, which was released in a calendar edited by Mr. Deckmyn, who is also a member of the Vlaams Belang party. During an event Mr. Deckmyn handed out the aforementioned calendars, on the cover of which was the picture at issue in the matter; an image which highly resembled that of the book "De Wilde Weldoener", an edition of the famed Suske en Wiske comic books. As explained by the court: "...[the] drawing is a representation of one of the comic book’s main characters wearing a white tunic and throwing coins to people who are trying to pick them up. In the drawing at issue, that character was replaced by the Mayor of the City of Ghent and the people picking up the coins were replaced by people wearing veils and people of colour". Subsequently the Vanderseteens, relatives of the comics' creator and holders of the copyright, among others, brought an action against Mr. Deckmyn asserting copyright infringement.

Under the Belgian Law on Copyright and Neighboring Rights, a copyright protected work is not infringed "[o]nce a work has been lawfully published, its author may not prohibit... caricature, parody and pastiche, observing fair practice". Mr. Deckmyn argued that his use of the comic's cover would be protected from infringement as a fair use under parody, yet the questions posed to the ECJ were:

"1. Is the concept of “parody” an autonomous concept of EU law? 2. If so, must a parody satisfy the following conditions or conform to the following characteristics: display an original character of its own (originality); display that character in such a manner that the parody cannot reasonably be ascribed to the author of the original work; seek to be humorous or to mock, regardless of whether any criticism thereby expressed applies to the original work or to something or someone else; mention the source of the parodied work? 3. Must a work satisfy any other conditions or
conform to other characteristics in order to be capable of being
labelled as a parody?"

The ECJ was faced with the definition of what amounts to parody, and whether this concept was truly autonomous within the EU law, more specifically Directive 2001/29.

The court quickly established that the concept of 'pardy' was indeed an autonomous concept in European law, as the Directive made no express mention of any national laws, giving the law a uniform interpretation within the Union, although Member States as still very much able to limit or extend the exception beyond its Union interpretation.

The second and third questions took the bulk of the ECJ's judgment, effectively determining the definition of a parody in European law. The court first established that, as the term is not defined in the Directive, that its interpretation would be "...determined by considering its usual meaning in everyday language, while also taking into account the context in which it occurs and the purposes of the rules of which it is part". This in the court's judgment, while agreeing with the Attorney General's definition, is "...first, to evoke an existing work while being noticeably different from it, and, secondly, to constitute an expression of humour or mockery". This writer would like to further add that, in most cases, national courts would also assess whether the parody itself, or the mockery or humor, is actually a genuine expression of mockery, rather than just a guise to prevent the courts from finding infringement.

Parodies can evoke a multitude of feelings

The court then assessed the conditions posed in the reference to the ECJ and whether they should be treated as a part of the exception in its application. As the provision is there to safeguard legitimate uses of copyrighted content, the court heavily empathizes that its scope "...of that provision... [should not be] restricted by conditions... which emerge neither from the usual meaning of ‘parody’ in everyday language nor from the wording of that provision". A much less restricted interpretation facilitates both the freedom of expression and a public interest in legitimate parody, as noted by the court.

The exceptions application has to be balanced, even in the light of its much less restricted interpretation, as noted by the court: "...the exception for parody... must strike a fair balance between, on the one hand, the interests and rights of persons... and, on the other, the freedom of expression of the user of a protected work who is relying on the exception for parody". This assessment has to take into account all circumstances in each instance, and should not be a mere prima facie 50/50 assessment.

The ECJ then relayed the final decision to the Belgian national courts, but did however express a need to assess the work on potential racial impacts, and negative connotations on such ground, as the work did indeed depict individuals of certain ethnic background in a very compromising light.

The UK government has already issued some guidance on the new exceptions coming into force next Wednesday, which helps in the future assessment of parody in this new regime. In their definition: "[t]he words “caricature, parody or pastiche” have their ordinary dictionary meanings. In broad terms, parody imitates a work for humorous or satirical effect, commenting on the original work, its subject, author, style, or some other target. Pastiche is a musical or other composition made up of selections from various sources or one that imitates the style of another artist or period. A caricature portrays its subject in a simplified or exaggerated way, which may be insulting or complimentary and may serve a political purpose or be solely for entertainment". Yet again this writer would have to point out that the use of a work under such a definition would still entail an assessment of whether the parody, pastiche or satire is well and truly such a work, and not just a faint attempt at parody purely to use the work at no cost.

All-in-all the ECJ's definition makes sense, at least to this humble writer, and does afford genuine parodies a wide shield in protecting their legitimate expression. Should conditions be set on the application of parody, such as in Belgium, the hurdles could become nearly insurmountable, and curb any real interest or willingness to create parody works. How the UK courts will apply this new exception remains to be seen; however the ECJ's considerations will undoubtedly serve as a great starting point.

19 September, 2014

Food is quite important to all of us, and not just because of its nourishing quality and necessity for life, but also for the sheer enjoyment of a dish which has been prepared with care and love. This writer for one will freely admit that he loves to both cook and eat (often the latter more than the former), which prompted me with a thought in the process of seeking out recipes to make: can you own a recipe, or if anything, are recipes protectable under intellectual property law? Upon initial thinking the question seems to beg an answer, since recipes are undeniably creations of great creative efforts, planning, knowledge and skill, which, prima facie at least, should afford it some level of protection. This aside, food is ubiquitous to all cultures, peoples, and as said above, a necessity, which would render their protection draconian or even preventative of the enjoyment of cultural aspects for the larger masses should recipes be isolated to only a select few. The question indeed deserves an answer, and I shall endeavor to do so below, separating the matter into each type of intellectual property.

Recipes and Copyright

Often people's first memories of recipes is a dusty old tome which their grandparents have kept and compiled over the years, containing family recipes and secrets from generations ago. Whether it is Gordon Ramsay or your lovely grandma, recipes take effort and skill to create and compile, being put into tangible form either on paper or online. Under the UK Copyright, Designs and Patents Act 1988, and similarly its US, Australian and Canadian counterparts, copyright protection is afforded to original literary works; however this protection is given to the expression of those literary ideas, not the ideas themselves (expanded more on this very blog here and here). Recipes, therefore, potentially could be protected under copyright should they be expressed in a very specific or original manner; however the ideas of the recipes themselves (for example the concept of a pancake) cannot be protected by copyright.

Some recipes are more 'original' than others

This was specifically discussed by the Australian IPO (link leads to an external PDF file), which this writer thinks is an accurate representation of the laws' applicability in most common law countries: "[t]he owner of copyright in a recipe has certain limited rights to control the manner in which their written recipe is used. This does not include, for example, preventing people from making the dish, or from writing their own descriptions of how to make it". To expand on this, the individual or entity can protect their recipe to an extent, but cannot prevent others from making that particular dish or writing down their version of the recipe. As expression is protected, and not ideas, mere techniques, information on ingredients or methods or the 'idea' of an overall recipe cannot be protected.

Copyright leaves recipes quite exposed, but does offer some level of protection should someone try to use your recipe which has been published in a book or in another protectable form. However should they want to publish their own version or efforts, even writing down a specific recipe in their own words after following someone cooking it, they are free to do so.

Recipes and Trademarks

The names of dishes can be quite valuable, especially if they gain a high level of traction. A famous dish can be highly desirable to protect in name, and under the UK Trade Marks Act 1994 (and similarly under its American, Australian and Canadian counterparts) a sign, an indicator of a goods' origin, can be protected, which easily encompasses the names of dishes or recipes. A recent example of this is the fabled Cronut, a mixture between a croissant and a donut, which became seemingly huge overnight. Arguably the recipe for a Cronut can be very valuable, and many have shared their takes on the item, but what truly brings protectability to the doughy foodstuff is its name - something its creator trademarked promptly. As illustrated above the idea of a Cronut is not protectable as is, but the name does prevent others from selling the item under the recognizable moniker, which is very often more valuable than attempting to prevent the use of a recipe.

This is not to say protecting a dish or a recipe can result in a positive outcome. Last year a Vietnamese restaurant in London faced some backlash after it asserted its trademark on the dish "Pho", albeit used in the restaurant's name rather than as a means to protect a specific recipe. Whether it is a food related name or a distinct recipe with an elaborate or distinct name, trademarks do serve as a great tool to protect recipes, yet are limited to only truly distinct cases, as one cannot simply just trademark a common recipe or dish.

Recipes and Patents

The more interesting choice of the three was an option this writer had never even considered; patenting a recipe. More often than not patents protect inventions, which encompasses a very wide array of things, but one would never think of a recipe as an 'invention' no matter how inventive the approach can be. Nevertheless, this is still quite possible, although any aspiring food patent seeker will be fighting an uphill battle at best.

Intricate methods of cooking often lead to mixed results

Under the UK Patents Act 1977 for an invention to be patentable it has to fulfill certain criteria: it has to be something new; involve an inventive step; and be capable of
industrial application. On the face of things a recipe could be exactly
that, and fall under each category; however one can imagine this would
pertain more to an industrial recipe, rather than a single kitchen in a
single restaurant. A good example of a food related patent is Cadbury's patent for chocolate that doesn't melt (and for the sake of balance Nestle's equivalent is here). The recipe clearly calls for a specific method of creation, a way to make the recipe, rather than the recipe itself. Chocolate is way too common for it to be afforded patent protection, but a novel way to produce chocolate could easily be patented if it falls under all of the requirements. For a great in depth look at the matter in the US, please do read Gene Quinn's article, which covers recipe patents under US law very comprehensively.

Patents are a tougher sell as a method for protecting recipes, but are still quite viable and an option should you dish be created in a very unconventional, new way, and possibly include a more industrial approach rather than one which relates to looks or flavor alone. It won't protect the recipe per say, but it will protect the method through which that recipe is produced.

Conclusion

In short, can you own a recipe? Yes and no. To own a recipe in its most truest sense, it seems nearly impossible under current intellectual property laws, and rightfully so, since no nation would want to deprive its citizens of the multifaceted world that is the culinary world. One can easily own an aspect or two to a recipe, for example its name or a specific structure if it entails a strict layering process for example, or even a printed recipe, but the limits the law imposes on those rights are very strict and nuanced. Being able to buy a lasagna outside of a certain restaurant in Italy is truly a blessing for us all, and we can take that availability for granted.

A message to all aspiring chefs and current culinary professionals: focus on the quality of your product rather than its protectability under intellectual property law.

14 September, 2014

After a myriad of changes in recent years, more specifically in copyright (more on which on this very blog can be found here, here, here and here), one can seem overwhelmed by the constant updates and tweaking intellectual property law has gone through. Just as things have seemed to settle down new changes have to be discussed, although this writer will wholly admit he is a bit late to the punch on this one (as the law was passed over a month ago). Nevertheless, a new piece of legislation has been passed, the Intellectual Property Act 2014, which is coming into force in a matter of weeks, prompting this writer to expand on its potential impact prior to it becoming solid law. The Act focuses on designs and patents, which shall be discussed separately below.

Designs

By far the bulk of the legislation, designs have been needing some revamping and adding to, even though they are quite well protected under the current Copyright, Designs and Patents Act 1988 and the Registered Designs Act 1949. As explained by the UK IPO: "Design law is often considered messy, complex and confusing, and small businesses, who don’t have the time or resources to disentangle it, can lose out. The IP Act will introduce a number of new measures and make some changes to the law in order to make design law simpler, clearer and more robust".

In terms of unregistered designs the Act changes the definition of a design from (in the CDPA 1988) "...the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article" to one which omits the phrase '...any aspect of'. Although a seemingly minute change, the law now reflects in a more concrete fashion what is considered a design and what isn't as a part of the legislation, whereas should you leave the phrase in it makes things a bit more ambiguous. This clearly reflects the legislature's attempt at making things more straightforward, and arguably they have done so, at least on the face of things.

The Act also changes the default ownership of an unregistered design, allowing for the designer to be the owner of their design should it not be made in the course of their employment. The Act omits the phrase "...in pursuance of a commission or" from the previous provision in the CDPA 1988, which clearly gave ownership to those who commissioned the work, even if rights were not intended to be conferred upon the creation of a design. This will undoubtedly lower any confusion or potential issues of ownership, though does lower the protection of the individuals or entities which commission a work unless specifically assigned to them as a part of the commission contract. Ownership is also extended to persons who reside in the European Union (i.e. a qualifying country) at large, or conduct business in the Union regularly. Previously this was much more narrow under the CDPA 1988.

Finally, in relation to unregistered designs, the Act creates exceptions for infringement of a design right for private acts, experimentation and teaching, and over ships and aircraft. This exception is more relevant to the new form of infringement, which was created to protect registered designs.

Nothing gets a designer's creative juices flowing like new legislation

All of the above changes largely apply to registered designs as well, with some minor differences; however the most important, and discussion inducing, change has been the addition of the aforementioned infringement of registered design rights. Should a person or a business copy a design (without the consent of the rights' holder), doing so intentionally and with knowledge or have reason to believe the design is registered, they can be held liable for infringement. The offense also extends to businesses selling, importing, exporting, or uses items which they know or have reason to believe have copied a registered design. Prima facie the offenses seem quite broad, and with a defense of only reasonable belief to the items' registration status, can be potentially quite wide-reaching, especially in relation to businesses selling or exporting goods. An infringer can face up to ten years' imprisonment and/or a fine. This can be said to be a welcomed change, in that designs have lacked a proper offense provision, which trademarks and copyright have had for years.

In the light of the new offense the Act does allow for third parties to use registered designs, should they have done so in good faith and prior to the work's registration. This is assessed under the light of proper measures taken to ensure the design is or was free to use, preventing others from using this provision as merely a guise to protect themselves from infringement.

Finally, the Act allows for design registrants to finally apply for one single design registration within the remit of the Hague Convention registration system, streamlining and enabling quicker, more efficient registration of designs in a more international scale. PatentsThe Act makes minor, yet important changes to the current patent regime, explained by the UK IPO in better terms: "The IP Act will introduce a number of changes to patent law, which simplify complex areas and make it cheaper and easier to use and defend patents. This will be beneficial for both patent holders and third parties". The IP Act also adds a provision which will add specific powers allowing for the inclusion of the Unified Patent Court as a part of the patent protection scheme in the UK. This will allow for a much quicker, more unified approach to processing any claims of patent infringement, as it spans the entire 25 Member States of the EU in the scheme. In addition to the Unified Patent Court the Act also allows for the sharing of unpublished patent applications with other patent offices through the UK IPO, which would allow for potential issues to be processed quicker and unclog the international system more. Conclusion

Overall the IP Act makes some welcome changes, and at least attempts to internationalize and streamline both patents and designs; something which has been, at least on the patent regime, long needed. Whether the new design infringement provision will cause issues will remain to be seen; however this writer for one believes it will strengthen the registered design scheme and potentially deter cases where infringement would be obvious. The Act will come into force in October, giving relevant parties enough time to prepare for any changes that affect them.

07 September, 2014

Since the US Supreme Court's decision in Association of Molecular Pathology v Myriad Genetics last year (more on which can be found on this very blog here and here), most of the general public and even the legal profession thought that the matter was done and dusted, and that genes, in the application created by Myriad Genetics, would be unpatentable. Even so the fight still lives on in the Land Down Under, and after a decision in the Federal Court of Australia last year the matter has gone further into the Full Federal Court of Australia on appeal, prompting yet a new analysis of the patentability of genes under Australian law.The case in question is D’Arcy v Myriad Genetics Inc, which concerned the same patent (albeit its Australian counterpart) as was discussed in the US Myriad Genetics case; Australian Patent 686004. The patent itself relates to, in simple terms, the isolation of one specific gene; BRCA1. Analysis of this particular gene can identify a heightened risk of breast or ovarian cancer in the carrier, should a mutation exist in that gene. Yvonne D'Arcy, a former cancer patient herself, brought the case forward, challenging the patent, in an attempt to potentially lower the costs of testing the gene, having an impact on future testing and the amounts of women getting their genes analysed for that particular mutation. Currently in Australia the costs are upwards to 3000 dollars, clearly indicating a potential costs issue in the field.As was the question in the previous case, the Full Federal Court would have to decide whether the invention would fall under the Statute of Monopolies 1623 as a 'manner of manufacture', and its interpretation in the NRDC case (more on which can be found here). The court extensively discussed the precedent and jurisprudential considerations which affect the case, yet left the application of those considerations quite brief. The appeal hinged on three arguments made by Ms. D'Arcy; that the artificial state of affairs in which the gene exists post isolation is not enough for it to fall under the Statute of Monopolies and be considered a 'manner of manufacture'; that the gene, even if isolated, is still the same as the one which exists in the human body; and that the patenting of a gene would be patenting a natural phenomenon, contravening the Patents Act 1990's exclusion of such matters from patentability.

Ms. D'Arcy argued that the isolation of the gene does not produce a product, which would leave the invention short from potentially being a manner of manufacture, as, in her mind, the isolation merely produces an end-effect, rather than a product. She further argued that the isolation of the gene does not produce an artificial state of affairs, as nothing is done to the gene aside from its removal from the genome for analysis, producing no artificial effect in itself bar from what occurs naturally as it exists within the genome. Even though she recognizes that this requires human intervention it still falls short from the word's definition in NRDC.

Gene isolation can be a good thing.

The court rejected this argument, stating that "[t]his submission fails to recognise that the High Court has made it clear that the principles discussed in NRDC are equally applicable to products. Further, the isolated nucleic acid is itself an artificial state of affairs. It is removed from the genome and from the cell. In order to determine whether an invention claimed is a relevant product, the question is whether it consists of an artificially created state of affairs, not whether it produces or fails to produce an artificial effect" (emphasis the court's). This writer for one would argue slightly against the court as an artificial state of affairs should consist of something which does not occur naturally, either through manifestation or through composition. The patent in question certainly does remove the gene from the genome, yet the gene still remains the same, both in what it contains and how it resides, but is merely taken out of its space like a Lego block. This, in my mind, is not enough. The court does qualify their position and agree that not all isolation can confer patentability; however this hinges largely on an economic benefit viewpoint rather than purely a scientific one. The court does draw on scientific facts and that the gene cannot code due to its removal, yet the argument seems flat and doesn't, to this writer at least, confer much logic. Take an engine as an example. Should the engine be removed from the car and all of its connections disconnected, it cannot move the car, yet one could logically argue the engine is still the same engine even without his capability. Although a simplified analogy it illustrates the folly in the court's argument.

The second argument brought forth is one which contends that the gene is the same as the one which occurs naturally in a human's genome. Ms. D'Arcy contended that even with the isolation factor the actual information within that gene is exactly same as in the one which has not been isolated from the aforementioned genome; a fact that the court and Myriad Genetics did acknowledge, albeit contended that this makes it identical to the one in the genome. This challenges the primary judge's notion of economic utility, which allows for the isolation to create an artificial state of affairs due to this utility. The court wholly rejected this, stating that "[the] [g]enomic DNA sequence does not exist outside the cell and in that sense it can be said that an isolated chemical is not the same as the chemical in situ. One difference is that the isolated chemical can be manipulated and utilised in ways that the other cannot. That is, they may have different uses or functions, including those set out in the specification. Treating the claim as one to chemical entities, they are not the same as the nucleic acid sequence encoding the BRCA1 polypeptide in situ. They have different beginnings and different ends". Again, this writer humbly disagrees with the court's notion of different utilization, and a clear emphasis on economic benefit in the gene's isolation. The gene still serves the same function as the one in the genome, yet cannot do so outside of the genome due to its isolation. This, and that its chemical composition is almost identical aside from the separated chemical bonds, clearly leaves the gene as the same as the one that occurs naturally and doesn't create an artificial state of affairs or a new invention.

The court also rejected Ms. D'Arcy's argument of Myriad Genetics patenting laws of nature, stating plainly that "The isolated DNA can be characterised as material derived from naturally occurring material. This is not excluded from patentability within the reasoning of NRDC. The use of a living organism to produce a substance such as an antibiotic is patentable. It is not a question whether there is any overlap between what occurs in nature and that which is claimed. If so, all biological material would be inherently unpatentable".

The court finally summarized its position:

"In our view the products the subject of claim 1 are different to the gene comprising the nucleic acid sequence as it exists in nature. It follows that the notice of contention based on this ground succeeds... The isolation of the nucleic acid also leads to an economically useful result – in this case, the treatment of breast and ovarian cancers. This is surely what was contemplated by a manner of new manufacture in the Statute of Monopolies."
The Federal Court also openly rejected the US Supreme Court's decision on the Myriad case: "With respect, the [US] Supreme Court’s emphasis on the similarity of ‘the location and order of the nucleotides’ existing within the nucleic acid in nature before Myriad found them is misplaced. It is the chemical changes in the isolated nucleic acid which are of critical importance, as this is what distinguishes the product as artificial and economically useful". Again, the Federal Court ignored the clear lack of differences in the gene and the one naturally occurring in the human genome, and places a heavy emphasis on economic utility rather than any differences which can be noted as marked.

Arguably the court has reached the wrong result, but one can imagine their potential rationale as to the economic benefit and a future marketplace for genetic and biological modification and analysis of humans in Australia. Yet the case seems flat in its reasoning and ignores the larger picture in its attempts to focus on the nuances of convalescent bonds. The case can be, and possibly will be, further appealed, and this writer for one cannot wait to see where the case is taken.

About the Blog

IP Iustitia is a blog that discusses intellectual property law (and associated topics), attempting to decipher IP law for those who engage with it once in their life, on a daily basis and anywhere in between.

For any questions, feedback, comments or inquiries, please email me, and I will get back to you as soon as possible.

Any and all feedback is appreciated, and emails and comments will be answered within a reasonable time frame. Due to a high amount of spam all comments are moderated before publication; however, criticism or dissenting opinions will be published, so long as it is not offensive or otherwise against good taste.

IP Iustitia also has a Twitter account, which can be used to get notifications on new articles, discuss topics that are written about, share content or even ask questions!

The Author

Jani Ihalainen (LL.B. (Hons), LL.M.), is a law graduate with a passion for all that is intellectual property law, residing in London, UK.
He also currently works for an international law firm in the City of London.

Protected Geographical Indicators (or PGIs for short) are a crucial part of being able to identify local goods that have a particular qualit...

Disclaimer

Any and all content on this web blog should not be construed as legal advice, but merely a discussion of facts, legislation, cases or current developments within intellectual property law. All opinions are purely of the respective author of each piece and do not relate to any actual, potential or third-party affiliations.

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